When they are new to the patent process, most people don’t realize that it can take years to get from the application to an issued patent. Many pitfalls are lurking along the way, but some of these can be avoided by ensuring that the invention is ready to enter this arduous process.
The journey that begins with an idea and that eventually is transformed into a marketable product is likewise long and difficult. At what point is it prudent to seek patent protection? Should it be done when the invention is more of a concept than a material thing?
It’s also vital to consider that not every innovation is eligible for the protection of a patent. When in doubt, it’s always wise to consult with knowledgeable intellectual property lawyers who can help with making well-informed decisions. It’s also sensible to understand the basic ground rules that underpin the process of obtaining a patent.
Does the Product Meet Patentability Legal Requirements?
U.S. patent law mandates that to be eligible for a patent, the subject matter must relate to a “process, machine, manufacture or composition of matter.” Additionally, the invention must be novel, that is, there must not already be a patent that covers the same disclosure.
The law also stipulates that the invention be useful and non-obvious. Essentially, this means that the product performs some function from which the public may derive benefit and that the innovation would not have been obvious to someone with skill in the art.
Does the Invention Have Commercial Value?
Obtaining a patent not only requires considerable time but also is expensive. Thousands of dollars may be spent from the point of drafting an application to patent issuance. However, inventors are willing to bear the expense because they believe that their innovation has commercial potential.
Essentially, there’s little reason to pursue a patent unless the invention has genuine potential to earn the inventor quite a bit of money. Ideally, the prospective revenues from sales of the product greatly outweigh the expense of obtaining a patent.
The patents that tend to generate the most revenue are the ones that pertain to first-of-its-kind inventions. These are the ground-breaking inventions that revolutionize the world, or at least a particular industry. Understandably, such technology is rare. Most patents are directed toward incremental improvements in existing technologies.
Not all of these improvements will warrant the pursuit of patent protection. Careful consideration must be given to deciding whether or not an improvement merits the time and expense of obtaining a patent.
Has the Invention Been Publically Disclosed?
The development of most new products involves the input and advice of numerous individuals, including potential customers and investors. Early-stage disclosures to these parties can be protected by various confidentiality agreements. When the invention is going to be revealed to a larger group or the public, then patent rights must be considered.
Ideally, a patent application would already be pending before any public disclosure of the invention takes place. This ensures that the inventor is protected should any member of the public decide to replicate the invention. The U.S. follows a first-to-file standard in which the first party to file for a patent application for a particular invention has priority over all other parties. Filing for a patent before public disclosure of a commercially viable product simply makes sense.
Also, keep in mind that patent protection in some foreign countries may not be available if the patent is publically disclosed before an application is filed.
It is rarely easy for the inventor or entrepreneur to independently know when it is the right time to pursue a patent. Consulting with a patent attorney is one of the most reliable methods for determining whether or not the time is right.
U.S. patent law contains the capacity for pursuing a provisional patent application. This placeholder filing provides a period of one year during which the invention may be further refined before a non-provisional patent application must be filed. Provisional applications provide an earlier priority date, a critical consideration in a first-to-file country.
The time and expense of pursuing patents make it worthwhile to work with a knowledgeable legal professional who can provide guidance when it is needed most.
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Author: Jeff Williams
Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.
Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.